Following stages are ordinarily encountered while registering a trademark in India:
1. Filing of trademark application in India and issuance of fee receipt with application number
2. Issuance of official acknowledgement ordinarily within 30 days
3. Issuance of Official letter with objections, if any
4. Replying to official letter within 1 month
5. Hearing, if required
6. Provisional acceptance of trademark application subject to advertisement in Journal for inviting oppositions
7. Advertisement in the Indian trademark Journal
8. Opposition, if any, within 3+1 months from date of publication of the application
9. Registration of Trademark, if no opposition if filed or is set aside
10. Issuance of Registration Certificate
Express Examination of Application
Indian Trademarks law allows express examination of the trademark application on filing of additional official fee along with a declaration stating the reason for such request. Within 3 months from the date of request the Registrar shall issue an Examination report.
Advertisement of Trademark Application
After the trademark application has been provisionally accepted by the Registrar of the Trademarks, the application shall be advertised in the Indian Trademarks Journal inviting opposition from public to the trademark.
Trademark Opposition
After publication of the trademark in the Indian Trademarks Journal, the trade mark remains open to opposition by public for a period of 3 months, further extendable for a period of 1 month upon prior request.
On filing of notice of opposition the application shall not proceed towards registration until the opposition is set aside.
Registration of Trademark
If there is no opposition against the registration of the trademark application or the opposition proceedings have been decided in favour of the Applicant, the Trade Marks Registry shall accept the trademark and issue a registration certificate to that effect.
Term of Registration & Renewal
The duration of registration of a trademark is 10 years from the date of filing of application in India and is further renewable for every 10 years thereafter.
Tuesday, July 19, 2011
Trademark filing requirements in India
Following are the basic requirements for filing of a trademark application in India:
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. International Class
3. Description of goods or services
4. User date in India or proposed to be used
5. Details of priority, if any, including application number, date of filing and country of filing
6. Translation and transliteration in English, if mark is not in Indian language
Power of authority has to be stamped as per Indian Stamps Act and preferably should be filed within one month from date of filing. Notarisation or legalisation is not mandatory.
Tradmark:
Specimen of the trademark for Agent:
• 12 copies if in black and white, if provided in print form or single copy if provided soft copy vide email
• 12 copies if in colour, if provided in print form or single copy if provided soft copy vide email
• For shape of goods 3-5 different views ( top, bottom, left side, right side and front view)
Description of goods or services
Under Indian trademarks law, the specification of goods or services must be within 500 characters. In event the description exceeds 500 words prescribed fee must be paid for each additional character along with an application to that effect.
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. International Class
3. Description of goods or services
4. User date in India or proposed to be used
5. Details of priority, if any, including application number, date of filing and country of filing
6. Translation and transliteration in English, if mark is not in Indian language
Power of authority has to be stamped as per Indian Stamps Act and preferably should be filed within one month from date of filing. Notarisation or legalisation is not mandatory.
Tradmark:
Specimen of the trademark for Agent:
• 12 copies if in black and white, if provided in print form or single copy if provided soft copy vide email
• 12 copies if in colour, if provided in print form or single copy if provided soft copy vide email
• For shape of goods 3-5 different views ( top, bottom, left side, right side and front view)
Description of goods or services
Under Indian trademarks law, the specification of goods or services must be within 500 characters. In event the description exceeds 500 words prescribed fee must be paid for each additional character along with an application to that effect.
Trademark Applications in India
Trademark Applications in India can be classified under two categories depending upon their priority claim.
1. Ordinary trade mark application without any priority
2. Conventional trade mark application- has to be filed within 6 months from date of filing of conventional application
In case of conventional trademark application, certified copy of the priority document has to be filed within 2 months from the date of filing of application in India.
Besides above trademark applications, there are also certification trademarks and collective trademarks that are registrable in India.
Trademark offices in India
There are five trademark registries in India located at New Delhi, Ahmedabad, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before trademark registry within whose territorial jurisdiction the agent/ attorney for applicant is located.
1. Ordinary trade mark application without any priority
2. Conventional trade mark application- has to be filed within 6 months from date of filing of conventional application
In case of conventional trademark application, certified copy of the priority document has to be filed within 2 months from the date of filing of application in India.
Besides above trademark applications, there are also certification trademarks and collective trademarks that are registrable in India.
Trademark offices in India
There are five trademark registries in India located at New Delhi, Ahmedabad, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before trademark registry within whose territorial jurisdiction the agent/ attorney for applicant is located.
Trade Dress And Its Interpretation By Courts In India
Trade dress refers to characteristics of the visual or sensual appearance of a product that may also include its packaging which may be registered and protected from being used by competitors in relation to their business and services. The characteristic includes their shape (3 dimensional), packaging, colour, graphic design or even the smell of the product.
The concept of trade dress was first brought in under the Trademarks Act, 1999 under the definition of ‘Mark’ which replaced the previous Trade and Merchandise Marks Act, 1958.
A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colours and any combination thereof. India allows registration in respect of goods as well as service marks, shape of goods, packaging or combination of colours.
The concept of trade dress was first brought in under the Trademarks Act, 1999 under the definition of ‘Mark’ which replaced the previous Trade and Merchandise Marks Act, 1958.
A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colours and any combination thereof. India allows registration in respect of goods as well as service marks, shape of goods, packaging or combination of colours.
What is a Well Known Mark
The concept of “well known mark” has been introduced in India and amended Section 2 (zg) defines a well known mark as:
“Well-known trademark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.”
Consideration for determining a “well known mark”:
While determining whether the mark is well-known mark, the registrar will take in to consideration the following:
(a) The knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark.
b) The duration, extent and geographical area of any use for that trademark.
c) The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services in which the trademark appears.
(d) The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of that trademark.
(e) The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record.
Whereas a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well known trademark for registration under this Act.
“Relevant section of Public” may be actual or potential consumers of, persons involved in channels of distribution of or business circles dealing with the type of goods or services to which the mark is applied.
The Registrar is not required to consider the following facts while determining a well known trademark.
a) The Trademark has been used in India
b) The Trademark has been registered
c) The application for registration of the Trademark has been filed in India.
d) The trademark is well known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India or
e) The trademark is well known to the public at large in India.
“Well-known trademark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.”
Consideration for determining a “well known mark”:
While determining whether the mark is well-known mark, the registrar will take in to consideration the following:
(a) The knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark.
b) The duration, extent and geographical area of any use for that trademark.
c) The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services in which the trademark appears.
(d) The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of that trademark.
(e) The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record.
Whereas a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well known trademark for registration under this Act.
“Relevant section of Public” may be actual or potential consumers of, persons involved in channels of distribution of or business circles dealing with the type of goods or services to which the mark is applied.
The Registrar is not required to consider the following facts while determining a well known trademark.
a) The Trademark has been used in India
b) The Trademark has been registered
c) The application for registration of the Trademark has been filed in India.
d) The trademark is well known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India or
e) The trademark is well known to the public at large in India.
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